(303) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 980511124-8284-02]
Revision of Patent Cooperation Treaty
Application Procedure
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Patent and Trademark Office (Office or USPTO) is confirming
the amendment of its rules of practice relating to applications filed
under the Patent Cooperation Treaty (PCT). This amendment of the rules
of practice conformed the United States rules of practice with the
corresponding changes to the Regulations under the PCT which became
effective July 1, 1998.
DATES: This final rule is effective on December 1, 1998. The interim
rule, published at 63 FR 29614 (June 1, 1998), was effective on July 1,
1998.
FOR FURTHER INFORMATION CONTACT: Richard Lazarus, PCT Legal Office
Supervisor, by telephone at (703) 308-6451; or by mail addressed to: Box
PCT, Assistant Commissioner for Patents, Washington, DC 20231; or by
facsimile to (703) 308-6459, marked to the attention of Richard Lazarus.
Supplementary Information: During a September-October 1997 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted amendments to the PCT Regulations.
These amendments to the PCT Regulations took effect on July 1, 1998, and
the amended PCT Regulations were published in the Official Gazette at
1210 Off. Gaz. Pat. Office 29 (May 12, 1998). An interim rule conforming
the United States rules of practice to the corresponding changes in the
PCT Regulations was published in the Federal Register at 63 FR 29614
(June 1, 1998), and in the Official Gazette at 1211 Off. Gaz. Pat.
Office 76 (June 23, 1998).
The Office has received no comments on the changes to 37 CFR contained
in the interim rule. Accordingly, the changes to 37 CFR contained in the
above-mentioned interim rule are adopted as final in this final rule.
Applicants are again notified that PCT Rules 20.4(c) and 26.3ter(a) and
(c) as amended are not compatible with the national law of the United
States, and thus the USPTO has taken a reservation on adherence to these
Rules through its notification to the Director General of WIPO to such
effect. See PCT Rules 20.4(d) and 26.3ter(b) and (d). Similarly, the
USPTO continues not to adhere to the unchanged provisions of PCT Rule
49.5(cbis) and (k) with respect to the translation requirements for
United States national stage applications (35 U.S.C. 371(c)(2)). See PCT
Rule 49.5(l).
The above-noted changes to the PCT Regulations include the addition of
new PCT Rules 89bis and 89ter (directed to electronic filing and
processing of international applications) which will enter into force at
the same time as the modifications to the Administrative Instructions
implementing those PCT Rules. Implementation of PCT Rules 89bis and
89ter is optional with each national office. In the event that the USPTO
decides to implement PCT Rules 89bis and 89ter, the USPTO will provide
notice to that effect in the Federal Register and Official Gazette.
Discussion of Specific Rules: A section-by-section discussion of the
changes to title 37 of the Code of Federal Regulations adopted as final
in this final rule is set forth in the above-mentioned interim rule at

63 FR 29614-17, and 1211 Off. Gaz. Pat. Office 77-78.
Other Considerations:
The United States rules of practice contained in title 37, CFR, must
conform to the PCT Articles and the Regulations annexed to the PCT. See
PCT Article 27(1). This final rule adopts as final changes required to
conform the United States rules of practice for international
applications to the amendments to the PCT Regulations which became
effective on July 1, 1998. Thus, this final rule is covered by the
foreign affairs function exception of 5 U.S.C. 553(a)(1), and may be
adopted without prior notice and opportunity for public comment. See
International Brotherhood of Teamsters v. Pena, 17 F.3d 1478, 1486 (D.C.
Cir. 1994).
As prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553, or any other law, the analytical requirements
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are
inapplicable. This final rule does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 12612 (October 26, 1987). This final
rule has been determined not to be significant for purposes of Executive
Order 12866 (September 30, 1993).
This final rule contains information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The principal
impact of this final rule is to adopt as final changes that conform the
United States rules of practice relating to applications filed under the
PCT to the corresponding amendments made to the Regulations under the
PCT.
The general purpose of the PCT is to provide a single set of standards
and procedures for the filing of patent applications on the same
invention in any of the over ninety PCT member countries. The PCT
provides a common filing procedure and a standardized application format
for international applications.
The collection of information in this final rule has been reviewed and
approved by OMB under control number 0651-0021. The public reporting
burden for this collection of information is estimated to average 0.95
hours per response, including the time for reviewing instructions,
searching existing data sources, gathering and maintaining the
information. Send comments regarding this burden estimate or any other
aspect of the data requirement, including suggestions for reducing the
burden to Richard Lazarus at the address specified above and to the
Office of Information and Regulatory Affairs, OMB, 725 17th Street,
N.W., Washington, D.C., 20503 (Attn: PTO Desk Officer).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
Businesses.
For the reasons set forth in the preamble, the interim rule amending 37
CFR Part 1 which was published at 63 FR 29614-29620 on June 1, 1998, is
adopted as a final rule without change.
Nov. 23, 1998 Q. TODD DICKINSON
Deputy Assistant Secretary of Commerce and
Deputy Commissioner of Patents and Trademarks
[1217 OG 143]